Workman Nydegger Secures Federal Circuit Affirmance of Summary Judgment of Noninfringement

Salt Lake City, UT — Workman Nydegger is pleased to announce a significant appellate victory for its client in the United States Court of Appeals for the Federal Circuit. The court affirmed a district court decision granting summary judgment of noninfringement, delivering a complete win for the firm’s client. 

In Puradigm, LLC v. DBG Group Investments LLC, the Federal Circuit upheld the Northern District of Texas’s ruling that the asserted patent was limited by prosecution history disclaimer and therefore not infringed. 

The case involved U.S. Patent No. 8,585,979, directed to photocatalytic air purification technology. The Federal Circuit agreed that statements made during patent prosecution constituted a “clear and unmistakable disclaimer” of certain subject matter, ultimately foreclosing the plaintiff’s infringement claims. 

A central issue on appeal was whether the patent applicant had acquiesced to the examiner’s position during prosecution, thereby absolving its disclaimer. The applicant had included language in its responses to the examiner during prosecution stating that it “neither agrees nor disagrees” with the examiner’s statements while reserving the right to challenge them later. The Federal Circuit held that this language prevented a finding of acquiescence, reinforcing that such “reservation of rights” language carries legal effect. 

The decision underscores an important strategic takeaway: when amending claims after a rejection, applicants must choose between maintaining their position (and accepting potential disclaimer) or acquiescing to the examiner—general reservations of rights cannot preserve both paths. 

Workman Nydegger shareholder Chad Nydegger argued the case before the Federal Circuit, with Ryan Morris with him on the brief.  

About Workman Nydegger 
Workman Nydegger is a leading intellectual property law firm providing strategic counsel in patent prosecution, litigation, and IP portfolio management to clients worldwide.